2687.01 Examiner Consideration of Submissions After NIRC [R-07.2015]

The rules do not provide for an amendment to be filed in an inter partes reexamination proceeding after a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) has been issued. Note that 37 CFR 1.312 does not apply in reexamination. Any amendment, information disclosure statement, or other paper related to the merits of the reexamination proceeding filed after the NIRC (except as indicated immediately below) must be accompanied by a petition under 37 CFR 1.182. The petition must be granted, in order to have the amendment, information disclosure statement, or other paper related to the merits considered. Where an amendment, information disclosure statement, or other paper related to the merits of the reexamination proceeding is filed after the NIRC, and the accompanying petition under 37 CFR 1.182 is granted, the examiner will reconsider the case in view of the new information, and if appropriate, will reopen prosecution. See MPEP § 2656 for a detailed discussion of the criteria for obtaining entry and consideration of information disclosure statement filed after the NIRC.

Interviews are not permitted in an inter partes reexamination proceeding (see MPEP § 2685). Thus, the examiner is not permitted to telephone the patent owner and obtain authorization to make an amendment. The only time an examiner’s amendment can be made in an inter partes reexamination after the NIRC has been issued is where an examiner’s amendment is needed to address matters that do not require the patent owner’s approval. However, matters that do not require the patent owner’s approval are generally minor formal matters. Thus, it would be rare for an examiner to need to withdraw the issued NIRC for issuance of a new NIRC with an examiner’s amendment, since withdrawal of the NIRC should not be done for minor formal matters. In view of this, any examiner’s amendment in an inter partes reexamination proceeding to be made after a NIRC (has been issued) requires the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS) to approve the examiner’s amendment.

Any "Comments on Statement of Reasons for Patentability and/or Confirmation" which are received will be placed in the reexamination file, without comment. This will be done even where the reexamination certificate has already issued.